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Netherlands: Word elements rule in similarity

Pacogi Netherlands filed a Benelux trade mark application for the mark shown in figure 1. Balenciaga was not happy about it and filed a formal opposition with the Benelux Office for Intellectual Property (BOIP). The opposition was based on the prior rights in the wordmark Balenciaga and the device mark (figure 2).

The BOIP granted the opposition, as a risk of confusion between the opposed mark and the prior rights was obvious, as a result of the similarity between the element Balengianni in the opposed mark and the prior word mark Balenciaga . Pacogi tried to throw up a smokescreen by accompanying its deposit with some visual elements; however the BOIP was not buying it.

Pacogi subsequently asked the Court of The Hague to annul the decision of the BOIP, and to register the trade mark application shown in figure 1. Balenciaga made a reasoned defence, asked the court to reject the request of Pacogi and to ratify the decision of the BOIP.

One of Pacogi's grievances was that the BOIP, when comparing the application with the earlier rights of Balenciaga, had only compared the word component Balengianni, and wrongly disregarded the figurative element above Balengianni, as well as the descriptive element "fragrances".

In its decision on September 29, the Court held that this grievance was based on an incorrect reading of the contested decision, as the BOIP did recognise these elements but held them to be insubordinate to the dominant component Balengianni.

The Court judged that the largest part of Balenciaga and Balengianni is similar. What is important is that the first part in both marks (Balen) is identical. It is generally assumed, and also in this case, that this part will get more attention from the relevant public because it considers the first part of the word element. As the marks to be compared are complex marks, this "rule" is even more applicable.

With the BOIP, the Court is of the opinion that the application and the prior mark are highly similar from a visual point of view. The visual elements in the mark Balengianni do not alter this opinion. The Court also ruled that the application and the prior mark Balenciaga are phonetically similar. Again, the identity of the first part of the marks (Balen) is decisive for this comparison.

A conceptual comparison is not to be made, as the marks do not have an independent meaning.

Thus, the second grievance of Pacogi that the application and the prior mark Balenciaga should not have been considered similar from a visual and aural point of view fails.

The judgment shows that when comparing the similarity between two marks, the emphasis generally lies on the word elements, provided they are dominant within the marks, and the identity of the first part of the marks, especially when the marks are complex. Here, the Court has ruled that the application and the prior mark are similar to such an extent that this can cause confusion among the relevant public.

Noëlle Wolfs

V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

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